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Recent Case Notes & Commentary

Proof of Common Law Trademarks: Evidence is Vital

Reflex Marketing, LLC v. Mars Nic / Fei Guo / Ming Guo

Case No. D2019-2621

To seek transfer of a domain name successfully under the UDRP, the Complainant’s task is relatively straight forward. It must prove, by the three elements of the Policy, that the Respondent has taken advantage of goodwill of its trademark. In order to do this, it must be evident that the Respondent knew about the Complainant’s trademark rights, or at the very least ought to have known. It is not simply enough to state one’s trademark rights. Evidence demonstrating the size of one’s business dealings and the reputation of the trademark are necessary to convince a panel that one’s trademark has been willingly attacked. As a recent Complainant found out the hard way, it is difficult to convince a panel that your trademark has been attacked if there is nothing to suggest anyone would know about its existence.

In Reflex Marketing, LLC v. Mars Nic / Fei Guo / Ming Guo, the Complainant sought transfer of the disputed domain, <>. It claimed that it had been using REFLEX MARKETING as a business name for some 30 years. However, it had only registered REFLEX MARKETING as a trademark in 2019, some 6 months after the Respondent, a Chinese individual, registered the domain.

Almost immediately, the Complainant’s case presented some major shortcomings. The Panel noted that:

Apart from its trademark (see below) there is no evidence before the Panel as to what it does, nor is there any evidence about its size, where it operates geographically (apart from the fact it is incorporated in the State of New York), how many employees it has, how many customers it has, what sort of online presence (if any) it maintains or indeed any other significant information about its business.

For the Panel to find the third element in favour of the Complainant, that the respondent registered and used the domain in bad faith, it must first accept the Complainant held trademark rights at the time of domain registration, and that the Respondent knew about them. However, given that the Complainant had not registered its trademark at the time of domain registration, it could only rely on any potential common law rights.

Common law trademarks can be difficult to prove at the best of times. One must show that their trademark has established a significant enough reputation in its field that consumers associate the term with their business or product. Without any evidence showing a business’s, size, location, presence (online or otherwise) or reputation, this task becomes impossible. Panels will only make inferences and judgements on the probabilities emerging from the evidence on record. Far from meeting its burden of proof, the Complainant could not even get its case off the ground. There was nothing to suggest that the Complainant’s business had ever made a sale, provided a service or had a single dollar in revenue, let alone that it had established common law rights and a reputation as far reaching as China. The Respondent claimed he had no idea of the Complainant’s existence, and there was nothing to suggest otherwise. The claim failed on the third element and was defeated.

This case contains an important lesson for potential UDRP complainants and their counsel. To succeed, one must prove, by evidence, that the Respondent has sought to take unfair advantage of their trademark rights. To lead the Panel to such a conclusion, it is vital to establish the business and trademark’s reputation and goodwill. If you rely on the mere existence of trademark rights and no more, you give the Respondent a very easy way out.

See also another case note on the same issue.


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